|\ United States R\tent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Offices
Address: COMMISSIONER OF PATENTS AND TRADEMARKS
Washington, D.C. 20231
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APPLICATION NO.
FILING DATE
FIRST NAMED INVENTOR
ATTORNEY DOCKET NO. CONFIRMATION NO.
09/930,747
08/14/2001
Mohamed Megahed
00CON159PC-CIP3
2062
25700 7590 09/26/2002
FARJAMI & FARJAMI LLP
16148 SAND CANYON
IRVINE, CA 92618
EXAMINER
CRUZ, LOURDES C
ART UNIT
PAPER NUMBER
2827
DATE MAILED: 09/26/2002
Please find below and/or attached an Office communication concerning this application or proceeding.
PTO-90C (Rev. 07-01)
Office Action Summary
Application No.
09/930,747
Examiner
Lourdes C. Cruz
Applicant(s)
MEGAHED ETAL
Art Unit
2827
- The MAILING DATE of this communication appears on the cover sheet with the correspondence address
Period for Reply
A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3 MONTH(S) FROM
THE MAILING DATE OF THIS COMMUNICATION.
- Extensions of time may be available under the provisions of 37 CFR 1 .136(a). In no event, however, may a reply be timely filed
after SIX (6) MONTHS from the mailing date of this communication.
- If the period for reply specified above is less than thirty (30) days, a reply within the statutory minimum of thirty (30) days will be considered timely.
- If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
- Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
earned patent term adjustment. See 37 CFR 1 .704(b).
Status
Responsive to communication(s) filed on 27 June 2002 .
2a)D This action is FINAL. 2b)S This action is non-final.
3) D Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
closed in accordance with the practice under Ex parte Quayle, 1935 CD. 1 1 , 453 O.G. 213.
Disposition of Claims
4) E3 Claim(s) 1-20 is/are pending in the application.
4a) Of the above claim(s) is/are withdrawn from consideration.
5) D Claim(s) is/are allowed.
6) 13 Claim(s) 1-20 is/are rejected.
7) D Claim(s) is/are objected to.
8) Q Claim(s) are subject to restriction and/or election requirement.
Application Papers
9) D The specification is objected to by the Examiner.
10) D The drawing(s) filed on is/are: a)D accepted or b)D objected to by the Examiner.
Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
11) D The proposed drawing correction filed on is: a)D approved b)D disapproved by the Examiner.
If approved, corrected drawings are required in reply to this Office action.
12) Q The oath or declaration is objected to by the Examiner.
Priority under 35 U.S.C. §§119 and 120
13) D Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 1 19(a)-(d) or (f).
a>n All b)D Some*c)D None of:
1 .□ Certified copies of the priority documents have been received.
2. Q Certified copies of the priority documents have been received in Application No. .
3. Q Copies of the certified copies of the priority documents have been received in this National Stage
application from the International Bureau (PCT Rule 17.2(a)).
* See the attached detailed Office action for a list of the certified copies not received.
14) Q Acknowledgment is made of a claim for domestic priority under 35 U.S.C. § 1 19(e) (to a provisional application).
a) □ The translation of the foreign language provisional application has been received.
15) ^ Acknowledgment is made of a claim for domestic priority under 35 U.S.C. §§ 120 and/or 121.
Attachment(s)
1 ) M Notice of References Cited (PTO-892) 4) □ Interview Summary (PTO-41 3) Paper No(s). .
2) CD Notice of Draftsperson's Patent Drawing Review (PTO-948) 5) d Notice of Informal Patent Application (PTO-152)
3) Information Disclosure Statement(s) (PTO-1449) Paper No(s) 3 1/2 . 6) □ Other:
U.S. Patent and Trademark Office
PTO-326 (Rev. 04-01)
Office Action Summary
Part of Paper No. 7
J.
Application/Control Number: 09/930,747
Art Unit: 2827
Page 2
DETAILED ACTION
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that
form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless -
(b) the invention was patented or described in a printed publication in this or a foreign country or in public
use or on sale in this country, more than one year prior to the date of application for patent in the United
Claims 1,2,5-14,17-20 are rejected under 35 U.S.C. 102(b) as being anticipated
by Selna (US 5640048).
Selna discloses (See cover fig.) a structure comprising: a substrate 52,54 having
a top surface for receiving a die 12; a conductor (8B, left) being adapted for connection
to a first substrate signal bond pad (10B, bottom left) and a second terminal (8A, left) of
said conductor being adapted for connection to a first die signal bond pad (not labeled
but inherently present); a printed circuit board 18 attached to a bottom surface of said
substrate; at least one via (6B, right) in said substrate; said at least one via providing
electrical connection between a second die signal bond pad and said printed circuit
board.
Selna also discloses a structure wherein:
• Said die is a semiconductor die
• Said at least one via provides an electrical connection between a
second substrate signal bond pad (8b, right) and said printed circuit
board, wherein said second substrate signal bond pad is electrically
connected to said second die signal bond pad
States.
Application/Control Number: 09/930,747 Page 3
' Art Unit: 2827
• Said second substrate signal bond pad is electrically connected to
said second die signal bond pad by a bonding wire 24
• Said at least one via provides an electrical connection between said
second die signal bond pad and a land (10B, right), said land being
electrically connected to said PCB (through 14B)
• Said at least one via provides an electrical connection between a
second substrate signal bond pad (8B, right) and a land (10B,
right), wherein said second substrate signal bond pad is electrically
connected to said second die signal bond pad, and wherein said
land is electrically connected to said printed circuit board (Through
14B)
• Said second via comprises a thermally conductive material
• Said conductor is an inductor for having inductance associated with
it
• See that said conductor (as indicated above) has a first terminal
(point of connection) connected to said first substrate signal bond
pad and said second terminal (point of connection between
conductor and die) connected to said first die signal bond pad
• See that the conductor comprises a plurality (see plurality of vias
shown) of via metal segments within said substrate
Application/Control Number: 09/930,747
Art Unit: 2827
Page 4
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all
obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set
forth in section 1 02 of this title, if the differences between the subject matter sought to be patented and
the prior art are such that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said subject matter pertains.
Patentability shall not be negatived by the manner in which the invention was made.
Claims 3-4,15-16 are rejected under 35 U.S.C. 103(a) as being unpatentable
over Selna.
See that Selna discloses all the structural limitations discussed above. However,
Selna does not specifically describe substrate 18 being comprised of an
organic/ceramic material. Failure of Selna to specifically disclose the material of which
the disclosed substrate/PCB is made of is considered to suggest the use of materials
known to be feasible for use for the claimed structure among semiconductor artisans.
Ceramic/organic materials are among those feasible materials that are well known and
widely used in the art. Therefore, it would have been obvious to one of ordinary skill in
the art at the time the invention was made to incorporate the well known PCB
comprising well known and widely used organic/ceramic material for these are known
among semiconductor artisans and Selna suggests their use. Also, see that the
specification and description of the invention is not focused on these materials and that
ceramic/organic materials in PCBs are not the claimed invention.
Double Patenting
Application/Control Number: 09/930,747
Art Unit: 2827
Page 5
The nonstatutory double patenting rejection is based on a judicially created
doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the
unjustified or improper timewise extension of the "right to exclude" granted by a patent
and to prevent possible harassment by multiple assignees. See In re Goodman 1 1
F.3d 1 046, 29 USPQ2d 201 0 (Fed. Cir. 1 993); In re Longi, 759 F.2d 887, 225 '
USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA
1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970);and, In re Thorington
418 F.2d 528, 163 USPQ 644 (CCPA 1969). '
A timely filed terminal disclaimer in compliance with 37 CFR 1 .321(c) may be
used to overcome an actual or provisional rejection based on a nonstatutory double
patenting ground provided the conflicting application or patent is shown to be commonly
owned with this application. See 37 CFR 1 . 1 30(b).
Effective January 1 , 1 994, a registered attorney or agent of record may sign a
terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with
37 CFR 3.73(b).
Claims 1-20 are provisionally rejected under the judicially created doctrine of
obviousness-type double patenting as being unpatentable over claims 18-33 and 58-66
of copending Application No. 09/713834 in view of Selna (US 5640048).
The above is a provisional obviousness-type double patenting rejection.
Claims 1-20 are rejected under the judicially created doctrine of obviousness-
type double patenting as being unpatentable over claims 1-17 of U.S. Patent No. US
6191477 in view of Selna (US 5640048).
The above Application and Patent fail to specifically disclose a conductor
patterned on the top surface of the substrate, it being adapted for connection to a first
substrate to the structures. Nonetheless:
It would be obvious to incorporate a conductor patterned on
the top surface of the substrate (as taught by Selna); it being adapted for
connection to a first substrate, to the structures in 09/713834 and in US
Application/Control Number: 09/930,747
Art Unit: 2827
Page 6
6191477, since it would have been obvious to one of ordinary skill in the
art at the time the invention was made that a conductive patterned in the
surface of the substrate is necessary (also known and commonly used for
connection between die and substrate). Additionally, substrates inherently
have conductive traces patterned within and on them to enable
connection.
Any inquiry concerning this communication or earlier communications from the
examiner should be directed to Lourdes C. Cruz whose telephone number is 703-306-
5691. The examiner can normally be reached on M-F 10-6:30.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's
supervisor, David L Talbott can be reached on 703-305-9883. The fax phone numbers
for the organization where this application or proceeding is assigned are 703-308-7722
for regular communications and 703-308-7722 for After Final communications.
Any inquiry of a general nature or relating to the status of this application or
proceeding should be directed to the receptionist whose telephone number is 703-308-
0956.
Lourdes C. Cruz
Examiner
Art Unit 2827
Lourdes Cruz
September 24, 2002
JEI
PR*